Justin D. DeAngelis, Associate

Protecting the Product Blog Feed

https://www.designrightsblog.com/

Protecting the Product™ is a Quarles & Brady LLP blog that highlights issues currently affecting the design rights legal field. The blog discusses and delivers analysis on relevant court decisions and domestic and international news and developments involving design patents, trade dress, design-related trademarks and copyrights, and other developments in design-related thinking and product and brand protection.

Recent Blog Posts

  • A recent decision of the United States Court of Appeals for the Federal Circuit has fundamentally altered the law on prior art anticipation for design patent applications. In this decision, captioned In re: SurgiSil, L.L.P. et al., No. 2020-1940 (Oct. 4, 2021), the Federal Circuit reversed a decision by the USPTO’s Patent Trial and Appeal Board (“Board”), which had previously affirmed an examiner’s anticipation rejection of a design patent claim for a lip implant based on a prior art reference... More
  • In a recent decision, the Review Board of the United States Copyright Office (“Board”) reversed an examiner’s prior refusal to register a copyright in the artistic elements present in the bed shown above, paving the way for the applicant to obtain a copyright registration in this work. Copyright law does not protect useful articles per se (i.e., articles having a useful function that does not serve merely to portray the appearance of the article or to convey information), but does protect... More
  • On October 17, 2020, the Chinese Legislature passed the Fourth Amendment to the Chinese Patent Law, which will come into effect on June 1, 2021. As discussed in our previous post, the Fourth Amendment included several updates that help move Chinese Design Patent Law toward harmonization with the laws of most major markets.  As June 1st quickly approaches, the article below highlights and expands upon some of the major updates coming to Chinese Design Patent Law. Partial Claiming For many years, partial... More
  • This is the first article in a planned series that will analyze available design protection strategies for various categories of products. Now that the era of work-from-anywhere and software-for-any-service has fully arrived, obtaining proper legal protection for software is paramount for many companies.  However, due to an expansive interpretation by courts of the “abstract idea” exception to utility patent eligibility in recent years, protection for software-based systems and methods via utility patents has been made difficult.  Accordingly, companies in this space... More
  • The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on December 21, 2020, requesting comments from the public related to the “article of manufacture” requirement for design patent eligibility appearing in Title 35, United States Code, Section 171. In particular, the USPTO asked whether the article of manufacture requirement should be revised to encompass “disembodied” designs made perceptible by new and emerging technologies. The comment period closed on February 04, 2021, with a total... More
  • The Federal Circuit’s recent decision in Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc. reinforces best practices for design patent enforcement and procurement. An important takeaway from this decision is that when enforcing design patents in litigation, patent owners should develop record evidence from fact and expert witnesses to assist the court in the ordinary observer analysis to ensure that motions for summary judgment of non-infringement are decided with a sufficient record. Another important consideration for design patent holders is... More
  • The United Kingdom (UK) officially withdrew from the European Union (EU) in early 2020, which commenced a transitional period that expired on December 31, 2020. During this transitional period, the UK remained subject to the EU Design System and the design laws of the European Union Intellectual Property Office (EUIPO). However, as of January 1, 2021, the UK is no longer subject to the EUIPO design regime. Owners of EU design registrations may now be wondering how their EU design registrations... More
  • The end-of-year shopping season started strong in 2020 due to the COVID-19 pandemic restrictions that kept many consumers in their homes and buying online. Brand owners and sellers should thus be mindful of the various options at their disposal to stop counterfeit goods from stealing legitimate e-sales and disappointing unsuspecting consumers who are unable to inspect goods when purchasing online. Monitoring Online Platforms and Documenting Counterfeits As we do for many companies, brand owners should proactively search e-tail and social media platforms... More
  • Since April 1949, when legendary golfer Sam Snead took the top prize, the winner of the annual Masters Tournament has been awarded a green blazer with gold buttons on the front and sleeves. Now, after more than 70 years of use, that color configuration as applied to a jacket—as shown in the mark image below—has become a federally-registered trademark. Just in time for this year’s rescheduled tournament—which will occur this week, November 12-15—Augusta National, Inc. may now use the registered trademark... More
  • Two recent decisions by the Patent Trial & Appeal Board (PTAB) highlight the nuances of allowable and impermissible drawing amendments during prosecution of U.S. design patent applications, and provide important guidance to design patent applicants on how to prepare their applications to ensure maximum flexibility during prosecution. In Ex parte Bologna, the PTAB reviewed an appeal of an examiner’s rejection under 35 U.S.C. § 112(a) for lack of written description, and affirmed the rejection. The priority design application claimed “the ornamental design for... More